In a case involving The Absolut Company Aktiebolag and the manufacturer and distributor of a product called 'Success Vodka', the Changsha Intermediate People's Court held that the allegedly infringing product and the plaintiff's registered trademark both consisted of a bottle shape with rounded shoulders and a short neck, and that the contours of the allegedly infringing bottle and those of the plaintiff's trademark were visually very similar. The court concluded that although the plaintiff's registered trademark was two dimensional (2D) and the allegedly infringing product was a three-dimensional (3D) shape, it was likely that the relevant public would assume that the manufacturer of the allegedly infringing product was somehow associated with the plaintiff in view of the reputation and distinctiveness of the Absolut Vodka brand.
The Absolut Company owns the trademarks ?? ('absolute' in Chinese) and ABSOLUT, as well as the 2D trademarks depicted below.
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The Absolut Company became aware of a product on the market named 'Success Vodka' (depicted below), which used not only the mark SUCCESS VODKA – as well as a blue font and decorative elements that were very similar to those of The Absolut Company – but also the same bottle shape as that of the Absolut Vodka product.
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On April 15 2013 The Absolut Company filed suit against the manufacturer and distributor of Success Vodka before the Changsha Intermediate Court on the grounds of trademark infringement and unfair competition.
The court noted that there were multiple similarities between the allegedly infringing product and The Absolut Company's registered trademark. More importantly, it considered that the bottle infringed the 2D trademark of The Absolut Company. In view of the similarities between the products' graphic elements and shape, as well as the reputation and distinctiveness of the plaintiff's genuine product, the court ruled that it was likely that the relevant public would assume that the allegedly infringing product was somehow associated with the plaintiff, which constituted confusingly similarity according to the Trademark Law.
On May 26 2014 the court upheld the plaintiff's claims, ordering the defendant to cease the infringing acts and compensate the plaintiff for its losses.
It is not easy to register a 3D trademark in China. The authorities tend to apply strict criteria when reviewing applications for 3D trademarks and, as a result, only a limited number of 3D trademarks can be registered. Even if the trademark owner manages to obtain registration, it is never easy to enforce in practice. On the one hand, the standards for determining infringement of 3D trademarks vary between administrative enforcement proceedings and judicial trials; on the other, 3D trademarks are often the subject of invalidation actions by infringers. Therefore, protecting and enforcing a 3D trademark is fairly difficult.
In this case, it was possible to use a 2D trademark registration which represented an object (the bottle) as a 3D trademark covering the shape of the bottle. This is an exemplary case which may serve as a model for the future.
Simon (Zinan) Yan
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